Patents, Trademarks, And Copyrights: A PRIMER PREPARED BY TABLE OF CONTENTS 1. INTRODUCTION . 5 B. DESIGN PATENTS . 14 WHAT ARE THE DIFFERENT TYPES OF INTELLECTUAL WHAT IS THE PROCESS FOR OBTAINING A PROPERTY PROTECTION AVAILABLE? . 5 DESIGN PATENT? . 15 2. PATENTS . 6 ARE DESIGN PATENTS OF ANY REAL VALUE? . 16 WHAT RIGHTS DO I OBTAIN WITH A PATENT? . 6 HOW LONG DO MY RIGHTS LAST WITH WHEN SHOULD A PATENT APPLICATION BE FILED? . 6 A DESIGN PATENT? . 16 ARE THERE DIFFERENT TYPES OF PATENTS? . 7 B. DESIGN PATENTS. 16 WHAT IS PATENT MARKING? . 7 HOW DO I TELL IF SOMEONE IS INFRINGING A. UTILITY PATENTS . 8 MY DESIGN PATENT? . 16 WHAT CAN THE SUBJECT OF A UTILITY CAN I PROTECT MY DESIGN OUTSIDE THE U.S.? . 17 PATENT APPLICATION BE? . .. 8 3. TRADEMARKS . 17 ARE COMPUTER PROGRAMS AND METHODS OF WHAT IS THE DIFFERENCE BETWEEN A TRADEMARK DOING BUSINESS PATENTABLE? . 8 AND A SERVICE MARK? . 18 WHAT IS THE TERM OF A PATENT? . 9 SHOULD I UNDERTAKE A TRADEMARK SEARCH? . .18 WHAT IS THE PROCESS FOR OBTAINING A HOW DO I REGISTER MY TRADEMARK? . .18 UTILITY PATENT? . .9 WHY BOTHER REGISTERING MY TRADEMARK? . 19 I PLAN TO OFFER MY PRODUCT FOR SALE SOON. WHAT IS THE TERM OF A TRADEMARK? . 20 CAN I FILE SOMETHING “QUICKLY” TO HOW DO I GIVE NOTICE OF TRADEMARK RIGHTS? . 21 PRESERVE MY RIGHTS? . 10 WHAT SHOULD I DO IF I THINK MY TRADEMARK HOW DO I TAKE ACTION IF I THINK MY PATENT IS OR TRADE DRESS IS BEING INFRINGED? . .21 BEING INFRINGED? . 11 CAN I OBTAIN INTERNATIONAL ARE PATENT SEARCHES AND CLEARANCE TRADEMARK PROTECTION? . 22 OPINIONS IMPORTANT? . 12 HOW DOES THE U.S. CUSTOMS SERVICE PROTECT CAN I OBTAIN INTERNATIONAL TRADEMARKS AND COPYRIGHTS? . 23 PATENT PROTECTION? . 12 WHY PLACE YOUR TRADEMARK ON A WHAT HAS THE NEW PATENT ACT CHANGED? . 14 WATCHING SERVICE? . 23 5 1. INTRODUCTION 4. COPYRIGHTS . 24 The questions “What’s a patent, What’s a trademark, What’s a copyright?”, “What do they cover?’’, and “What is the difference WHAT RIGHTS DOES A COPYRIGHT between them?” are frequently asked by our clients, friends, and GIVE TO THE AUTHOR? . 24 colleagues in general practice. To answer these questions in a WHAT RIGHTS DOES AN EMPLOYER HAVE? . 24 clear and straightforward manner, we are pleased to present this primer on patent, trademark, and opyright law (often called WHAT DOES A COPYRIGHT NOT COVER? . 25 “intellectual property” law). HOW DO I OBTAIN A COPYRIGHT REGISTRATION? . 25 WHAT IS THE TERM OF COPYRIGHT PROTECTION? . .26 What are the Different Types of Intellectual Property Protection Available? HOW DO I OBTAIN INTERNATIONAL COPYRIGHT PROTECTION? . 26 • A patent protects a product’s utilitarian/ functional or HOW DO I ENFORCE MY COPYRIGHT RIGHTS? . .26 ornamental aspects WHO DO I CONTACT FOR MORE INFORMATION? . 28 • A trademark protects the brand or symbol that identifies a product’s source • A copyright protects written and artistic expression Example: A cosmetic manufacturer markets a new perfume, using the name of a celebrity. The art work on the packaging and the artistic shape of the bottle may be protected by copyright. (The shape might also be protected by a design patent.) The name of the manufacturer and the name of the celebrity may be protected as trademarks. The new tamperproof closing for the package and for the perfume container may be protected by a utility patent. 6 7 6 7 2. PATENTS 2. PATENTS A patent is a U.S. Government grant, granted by the United States Are There Different Types of Patents? Patent and Trademark Office (“USPTO”), that gives its owner the right to exclude others from making, using, selling, offering to sell, A patent is a U.S. Government grant, granted by the United States Are There• Utility Different patents Types protect of Patents? functionality or importing the invention claimed in the patent. Patent and Trademark Office (“USPTO”), that gives its owner the • Design patents protect ornamental appearance right to exclude others from making, using, selling, offering to sell, • Utility patents protect functionality orWhat importing Rights Dothe Iinvention Obtain with claimed a Patent? in the patent. Yes. The• Designtwo most patents common protect types ornamental of patents appearance are utility patents, which protect the utility or functionality of an inventive product What Rights• The rightDo I Obtainto prevent with others a Patent? from practicing your invention or process, and design patents, which protect the ornamental Yes. The two most common types of patents are utility patents, appearance of all or part of a product. A patent• The does right not to give prevent its owner others thefrom affirmative practicing yourright invention to make which protect the utility or functionality of an inventive product or sell the product disclosed in the patent, since other patents or process, and design patents, which protect the ornamental owned by others may exist which cover other aspects of the same appearanceWhat is Patent of all Marking? or part of a product. A patent does not give its owner the affirmative right to make product. A patent does however give its owner the right to stop or sell the product disclosed in the patent, since other patents others from making or selling the invention claimed in the patent. • Can use “Patent Pending” upon filing a patent application owned by others may exist which cover other aspects of the same What is Patent Marking? These “exclusionary rights” granted by a patent can be very valuable product. A patent does however give its owner the right to stop in part because they allow patent owners to license the right to • Should label with Patent Number when patent issues others from making or selling the invention claimed in the patent. • Can use “Patent Pending” upon filing a patent application practice the specific invention claimed in the patent to others. These “exclusionary rights” granted by a patent can be very valuable Notice of patent rights should be given on products to make in part because they allow patent owners to license the right to • Should label with Patent Number when patent issues competitors wary of copying. Pending utility patent applications practiceWhen Should the specific a Patent invention Application claimed be inFiled? the patent to others. are initially kept secret by the USPTO for 18 months after filing, Notice of patent rights should be given on products to make unless non-publication is requested. Design patent applications • Best to file before public disclosure or offer for sale competitors wary of copying. Pending utility patent applications When Should a Patent Application be Filed? are never published before being granted. are initially kept secret by the USPTO for 18 months after filing, • Must be filed within one year of disclosure, public use, or unless“Patent non-publication Pending” marked is requested. on a product Design means patent that an applications application • Best to file before public disclosure or offer for sale offer arefor a never patent published is pending before in the USPTO.being granted. An inventor may mark “Patent Pending” on its product or packaging once a patent application • Must be filed within one year of disclosure, public use, or “Patent Pending” marked on a product means that an application is on file. Once a patent has issued or the application has lapsed, U.S. patentoffer applications should be filed before any sort of public for a patent is pending in the USPTO. An inventor may mark “Patent this marking is no longer appropriate. disclosure is made or promptly after the invention becomes “known” Pending” on its product or packaging once a patent application to others. Inventions may become known through disclosure such “Patent No. X,XXX,XXX” marked on a product means that a U.S. patent applications should be filed before any sort of public is on file. Once a patent has issued or the application has lapsed, as in a technical talk, public use, or an offer for sale, including by patent has already issued. The use of such a marking notice is disclosure is made or promptly after the invention becomes “known” this marking is no longer appropriate. those who obtained information from the inventor. required in most circumstances in order to obtain damages from to others. Inventions may become known through disclosure such “Patent No. X,XXX,XXX” marked on a product means that a Patent applications in the U.S. must be filed within one the infringer. as in a technical talk, public use, or an offer for sale, including by patent has already issued. The use of such a marking notice is year of when the invention becomes known. In many foreign Virtual marking is now also available where the marking on those who obtained information from the inventor. required in most circumstances in order to obtain damages from jurisdictions, there is no similar one-year grace period, but if a products includes the terms “patent” or “pat.” followed by a free-to- Patent applications in the U.S. must be filed within one the infringer. U.S. application is filed before disclosure, in general, foreign filings access web address rather than a list of individual patent numbers. year of when the invention becomes known. In many foreign Virtual marking is now also available where the marking on can rely on the U.S. filing date. jurisdictions, there is no similar one-year grace period, but if a products includes the terms “patent” or “pat.” followed by a free-to- U.S. application is filed before disclosure, in general, foreign filings access web address rather than a list of individual patent numbers. can rely on the U.S.